The difference between your trade mark and domain name

If you’re starting a business, you’re likely to be well acquainted with trade marks and domain names.

Your trade mark and your domain name are both great tools in establishing a strong brand for your business from the outset, however, a trade mark is different from a domain name in that it is a piece of intellectual property, rather than just an asset.

Below, I have outlined the key differences between a trade mark and a domain name and why they are both important for your business and brand.

How is a domain name different to a trade mark?According to IP Australia (the government body dealing with trade marks and other intellectual property), a domain name is your business’s online address on the web.

Customers can easily find your business using a domain name as it distinguishes your website from others. Domain names should be easy to remember and incorporate words which reflect the business name. You need to register your domain name to protect it.

The primary distinction between a domain name and a trade mark is that trade mark registration provides you with a proprietary interest in a name and you have an exclusive right to use it.

How you can protect your brand: trade markingHaving an exclusive right to use your business name and protecting it from competitors is of untold value when you’re working towards creating a recognisable and trusted brand.

When you have worked hard to establish a name for your business in a competitive industry, the last thing you want is to have it copied by a competitor which speaks to the worth in applying for a trade mark.

How can I apply for a trade mark?IP Australia assesses all applications for trade marks and considers whether an application meets the requirements set out in the Trade Marks Act 1995 (Cth).

There are multiple factors that the IP Australia examiners consider, including whether the trade mark is ‘scandalous’ or whether it is too descriptive of geographic origin. A trade mark application can be rejected for the following reasons:

– Capable of distinguishing goods and services:If your trade mark is not capable of distinguishing your goods and/or services, it is likely to be rejected. A trade mark is not capable of distinguishing goods or services where the trade mark contains commonly used words (e.g. using ‘unblock your drain’ to describe your plumbing services) or where it indicates geographic origin (e.g. ‘Locksmith Parramatta’).

– Identical or deceptively similar:A trade mark is unlikely to be accepted if it is identical or deceptively similar to another trade mark. Factors that IP Australia considers are the appearance or sound of the word (e.g. bearfoot and barefoot), the nature of the goods or services and the kind of consumer who would be purchasing the goods.

– Scandalous:If your trade mark is ‘scandalous’,it’s unlikely to pass muster. The Act is vague on the definition of ‘scandalous’, however, people who have tried to register trade marks such as ‘absof*#kinglutely’ have been rejected in the past.

– Likely to mislead or confuse: Attempting to register a misleading trade mark has little chance of success. For example, if you try to register a domain name and are not the owner, this is misleading and will be rejected.

Another example is if you attempt to register the name of a well-known person – perhaps Glenn McGrath as a trade mark. Consumers will be misled into believing Glenn McGrath endorses that particular product, and so an application to trade mark an individual’s name is likely to be rejected (unless this is actually you).

Trade marks and domain names – both importantAs mentioned above, the importance of your branding, your reputation and your standing amongst your clients as a new business is paramount. Having both an easily identifiable and memorable domain name and trade mark are essential tools in your branding toolkit.

Your domain name is your online address and having one that is easy to remember makes it that much easier for your clients to find you! Your trade mark adds a much stronger layer of protection and stops competitors using your name, so you are able to use it exclusively.

Key Takeaways:In short, there are key differences between trade marks and domain names. Both play an integral role in developing and securing your business’s brand. A domain name is your online address, whereas a trade mark is a piece of intellectual property in a name.

You can apply for a trade mark through IP Australia and key tips to remember are that an application may be rejected if it’s not capable of distinguishing your goods or services from those of other traders, it is identical or deceptively similar to another person’s trade mark, it is scandalous or it is likely to mislead consumers.

If you need assistance with deciding what trade mark is best for your business and lodging an application, let our intellectual property lawyers know on 1300 544 755.

About Ursula Hogben

Ursula Hogben is the co-founder and General Counsel of LegalVision ILP, a commercial law firm, with free legal information, online services and fixed-fee prices. Follow Ursula on Twitter: @Ursula.Hogben